10:23am PT by Eriq Gardner , Austin Siegemund-Broka
Judge Leans Against "Reese Witherspoon" as a Protectable Slogan
It's become fashionable for celebrities to register their names as trademarks. Are those registrations more cubic zirconia rather than real diamonds?
Take a lawsuit that Reese Witherspoon has filed against a dozen companies for marketing products like “Reese Ring” and “Emitations Reese Witherspoon Comparable Wedding Ring." Some of the defendants have settled, while others are getting ready for a trial in February.
Before that happens, Witherspoon has to survive several summary judgment motions. In October, she hurdled past one brought by Sears over the issue of the retail giant's liability for what's sold by third-party vendors in its online marketplace. On Tuesday, she went before Los Angeles Superior Court judge Gerald Rosenberg, asked by e-commerce company Skye Associates to address her various intellectual-property theories.
In a tentative opinion issued before the hearing, Rosenberg rejected Witherspoon's trademark claims. He wrote there is no evidence of consumer confusion, that the actress hadn't established secondary meaning to her full name and more.
"Plaintiff's name and images alone do not combine to establish protectable trade dress, ordinarily reserved for packaging," added Rosenberg. "Plaintiff's name is not a protectable slogan."
At the hearing, upon arguments by Witherspoon attorney Jeffrey Abrams and Skye attorney Daniel Mayeda, Rosenberg held back on finalizing the opinion. He told both sides he would take the matter under advisement.
Abrams argued that the trademark claims were tied into the Lanham Act's prohibition on featuring a false endorsement and that the crux of the issue — the likelihood of confusion — constitutes a question of fact that is best reserved for a jury.
"In our case having plead a false endorsement claim, we're not required to prove the traditional indicia of trademark, but if we are, we could," the attorney said.
As for confusion, Abrams added,"The factors to consider are the level of recognition of the plaintiff among the segment of society in which the defendant works. Ms. Witherspoon obviously has a high level of recognition among Skye's demographic. Secondly, the relatedness of the defendant's fame and success of the product. The plaintiff's success as a film actress is directly related because they capitalize on her celebrity."
Even if Witherspoon's trademark claims fail, the actress will probably be allowed to move forward on her other claim that the defendant violated California's right of publicity statute by misappropriating her name and likeness.
According to the tentative, Rosenberg is leaning towards rejecting Skye's argument that telling consumers they could buy jewelry like the ones Witherspoon wears is protected free speech.
"The use of Plaintiff's name and likeness were for the purposes of selling its rings," wrote the judge. "Defendant's use does not promote a news medium, was not a news article, did not advertise an act protected by the First Amendment, was not part of any underlying work of art or expression and was entirely a commercial advertisement intended to entice potential customers to purchase the rings."
The judge also is being asked to address Witherspoon's demand of punitive damages. He has told the parties that it is Skye's burden to show it acted with no malice, fraud or oppression in the way it exploited Witherspoon. Mayeda told the judge that Skye removed the ad featuring the actress as soon as it was sued.